Nabisco, Inc.v.Bluebonnet Nutrition Co.

Trademark Trial and Appeal Board

Apr 1, 1998

No. 91094794 (T.T.A.B. Apr. 1, 1998)

Paper No. 20
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 1, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Nabisco, Inc.
v.
Bluebonnet Nutrition Co.
_____
Opposition No. 94,794
to application Serial No. 74/244,783
filed on February 10, 1992
_____
Steven H. Hartman for Nabisco, Inc.
John S. Egbert of Harrison & Egbert for Bluebonnet Nutrition
Co.
______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 20, 1992, applicant filed an application to
register the mark shown below on the Principal Register for
what were subsequently identified by amendment as “dietary
supplements,” in Class 5.
Opposition No. 94794
2
The application, as amended, states that the drawing is
lined for the colors blue and purple. Applicant claimed use
of its mark since November 24, 1991 as the basis for the
application.
Following publication of the mark under Section 12 of
the Act, a notice of opposition was timely filed by Nabisco,
Inc. on March 17, 1994. As grounds for opposition, opposer
claimed prior use and registration1 of the mark shown below
for oleomargarine, and contended that applicant’s use of the
mark it seeks to register in connection with the goods set
forth in the application is likely to cause confusion with
opposer’s mark within the meaning of Section 2(d) of the
Act.
Applicant’s answer denied that confusion is likely.

1 Reg. No. 547,894, issued to applicant’s predecessor on
September 11, 1951, and renewed twice; The goods are listed as
“oleomargarine and sandwich spread.”
Opposition No. 94794
3
A trial was conducted in accordance with the Trademark
Rules of Practice, but only opposer took testimony and
introduced evidence. Opposer took the testimony of John
Holmberg, its business director for margarine. Several
exhibits to this testimony were properly introduced into the
Opposition No. 94794
4
record. Also of record, by means of a notice of reliance
filed by opposer on March 14, 1995, are copies of two
registrations owned by opposer, and several dozen third-
party registrations wherein the listed goods include both
vitamins, minerals, dietary supplements or food supplements,
on the one hand, and on the other, margarine, vegetable oil
spread, butter, edible oil and fat, or other dairy or dairy-
based food products. The two registrations owned by opposer
were the one pleaded in the notice of opposition, shown
above, and Reg. No. 569,025, for the mark shown below,
which was issued to applicant’s predecessor on January 13,
1953, and has been renewed twice. The product for which
this mark is registered is also oleomargarine.
Both parties filed briefs, but no oral hearing was
requested. Based on careful consideration of the written
record and arguments of the parties, as well as the
applicable legal principles governing our resolution of the
issue of likelihood of confusion, we find that opposer is
entitled to judgment because confusion is likely.
The record shows that opposer introduced its “BLUE
BONNET” brand of margarine in 1927 and has been selling it
under its registered trademarks continuously since long
Opposition No. 94794
5
before applicant began using its mark on its dietary
supplements in 1991. In any event, in view of opposer’s
subsisting unchallenged registrations, priority is not an
issue in this proceeding. King Candy Co. v. Eunice King’s
Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
The Court, in In re E.I. Du Pont de Nemours, 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), listed the factors which are
appropriate to consider in determining whether confusion is
likely. Of those factors, the ones argued by the parties to
be relevant to the dispute now before us are the similarity
of the marks; the relatedness of the goods on which the
marks are used and the channels of trade through which the
goods move; the notoriety or fame of opposer’s mark; and the
fact that there is no evidence that actual confusion has
occurred in the marketplace for the goods in question.
Turning first to the similarity between the marks, we
find them to be quite similar because they create very
similar commercial impressions. Applicant contends that its
mark connotes the state flower of Texas, the state where
applicant is located, whereas opposer’s connotes a woman’s
blue-colored bonnet, and that the word “BLUEBONNET” is
extensively used and registered for a variety of goods and
services in that state. These arguments, however, are not
supported by any testimony or other evidence.
Opposition No. 94794
6
The fact is that applicant’s mark, as shown above,
consists of the word “Bluebonnet” above a blue flower design
on a purple rectangular background. When we consider
applicant’s mark in its entirety, as we must, we find that
the word portion of the mark is dominant, and it is the
nearly identical term, “Blue Bonnet,” which is the mark
opposer registered in 1951 and has used continuously since
then. Notwithstanding the minor differences in appearance
because of applicant’s design element and the fact that
“Blue Bonnet” is shown as two words in opposer’s
registrations, we find the marks in their entireties to be
quite similar. One of opposer’s marks is the term alone,
without any design component, and it is the term which is
the key element by which both opposer’s other registered
mark and the mark applicant seeks to register will be
recalled. Ceccato v. Manifattura Lane Gaetano Marzotto &
Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994).
That applicant may not have intended to cause confusion
when it selected its mark is not determinative of the issue
of whether confusion is likely. Seabrook Foods, Inc. v.
Bar-Well Foods Ltd., 192 USPQ 797 (TTAB 1976).
While opposer neither pleaded nor proved that its mark
is famous, the record does establish that its “Blue Bonnet”
marks are well known. We are provided with no evidence that
any other business in this country has used or registered
Opposition No. 94794
7
either “Bluebonnet” or “Blue Bonnet” as a trademark or
service mark for any other goods or services. Even
applicant concedes (brief P.6) “that opposer’s ‘Blue Bonnet’
mark is widely known and widely used,” but applicant argues
that its dietary supplements are “completely unrelated”
(brief p.5) to the goods of opposer. We disagree.
The third-party registrations made of record by opposer
are the evidence upon which this conclusion is based. They
show that the ordinary consumers who buy both margarine and
dietary supplements have a basis for understanding that the
use of similar marks on both types of products would likely
indicate that they emanate from the same source. See: In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Moreover, both types of products ordinarily move in the
same channels of trade to the same kinds of purchasers,
ordinary consumers. It seems quite reasonable that such a
customer, concerned with his or her diet to the extent that
he or she would buy margarine, which has no cholesterol and
is low in unsaturated fat, might also purchase dietary
supplements such as those applicant sells under its mark.
It is significant that neither the application nor opposer’s
registrations limit or restrict the trade channels for
either product. In the absence of any such restrictions or
limitations, even if we had been presented with evidence
establishing that applicant’s goods actually have different
Opposition No. 94794
8
channels of trade and are sold through different types of
stores than opposer’s product, (and, again, we have no such
evidence), we would disregard this argument. In re Fort
Howard Paper Company v. Marcal Paper Mills, Inc., 189 USPQ
305 (TTAB 1975).
Margarine and dietary supplements, as noted above, are
relatively inexpensive items, ordinarily sold in retail
grocery stores without a particularly high degree of
deliberation or care on the part of the purchaser. When
applicant’s mark, which is so similar to opposer’s well
known marks, is used on these related goods, confusion is
clearly likely.
That no actual confusion has been established by
opposer does not alter this conclusion. We have no evidence
regarding the area or extent of applicant’s use of its mark,
so we could hardly evaluate whether there has been any
significant opportunity for confusion to have occurred, much
less to have been reported. Citing Roffer Industries, Inc.
v. KMS Research Laboratories, Inc., 213 USPQ 259 (TTAB
1982), and Allstate Insurance Co. v. DeLibro, 6 USPQ2d 1220
(TTAB 1988), opposer notes further that evidence of actual
confusion is notoriously difficult to come by. Again, we
agree.
Lastly, even if we were left with any doubt as to
whether confusion is likely in the instant case, and we
Opposition No. 94794
9
emphasize that we have none, such doubt would necessarily be
resolved in favor of opposer as the prior user of a well-
known registered mark. Hiram Walker & Sons, Inc. v.
Castlewood International Corp., 196 USPQ 636 (TTAB 1977).
Accordingly, the opposition is sustained and
registration to applicant is refused.
R. F. Cissel
P.
Q. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board